Our annual “Year in Review” feature sums up the most important Intellectual Property (IP) news and developments that unfolded over the past year in the Middle East, Africa, and their neighboring regions.
This past year highlighted the extraordinarily valiant efforts that the entire world took in fighting the pandemic. With vaccination campaigns and social distancing still in effect, many Patent and Trademark Offices (PTOs) gradually reopened, while continuing to rely on their online services. These initiatives, among others taken by the authorities concerned, demonstrate a ubiquitous commitment to innovation and the importance of IP to the local economies of the countries in the region.
We, at Saba IP, continued to take measures to ensure operational continuity and keep providing an uninterrupted service to our clients. Our professionals across the region made use of the firm’s technological and operational infrastructure to work remotely and access our secure servers through encrypted connections that ensure the confidentiality, integrity, and availability of all emails and documents. Such measures implemented by the firm continue to mitigate the spread of the virus and ensure all our regional offices maintain the outstanding service that our clients have grown accustomed to receiving from Saba IP.
As a testament to our relentless commitment to excellence, Saba IP received numerous nominations and won several awards, chief amongst them was the “IP Stars UAE Firm of the Year” as published by Managing Intellectual Property. Acquisition International also named Saba IP the “Best International IP Firm in the Middle East and North Africa (MENA)” and The Patent Lawyer Magazine listed Saba IP as the “Most Well-Respected Firm” in the region.
Perhaps the most notable update concerning trademarks from East Africa was the reopening of the Somali Intellectual Property Office – after a period of almost three-decades of hiatus. While Somalia is expected to issue new legislation on intellectual property, for the time being the pre-federal IP law remains in force.
On the patent front, a development that has made a significant impact on the region and applicants was the suspension of new filings in the GCC Patent Office (GCCPO), the only regional patent office in the MENA. The GCCPO, a unitary system that comprises Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates (UAE), stopped accepting new patent applications as of January 6, 2021. While this is a temporary situation, as an amended law has been published but awaits new regulations to start implementation, a large number of applicants found themselves having to reassess their filing strategy and budget for the Arabian Gulf countries in the interim.
Other notable developments in the region worth pointing out are outlined below:
Updates on the Legal Scene:
Kuwait published the Implementing Regulations of the unified GCC Anti-Commercial Fraud Law No. 20 of 2019. The new regulations were published on May 31, 2021 in order to assist the authorities concerned in their ongoing efforts to enforce the Law and eliminate shady business practices in the country.
The Ministry of Justice in Saudi Arabia launched its first digital judicial data portal to provide a single entry point through which lawyers, judges, and other researches are able to access final commercial rulings issued by Courts of the First Instance, Courts of Appeal, the Supreme Court, and other relevant legal documents.
The UAE issued Federal Law No. 15 of 2020, colloquially known as the Consumer Protection Law, on November 10, 2020, which repeals the outgoing Federal Law No. 24 of 2006, and covers all goods and services within the national borders of the seven Emirates that comprise the UAE.
The Egyptian Customs Authority launched a new electronic system for the pre-registration of all shipment information, aptly named the Advanced Cargo Information (ACI). Registration on the ACI became mandatory for all shipments arriving at Egyptian seaports as of July 1, 2021.
The Lebanese Domain Registry (LBDR) announced that the registration and maintenance of an “.lb” domain name will no longer be free, as it had been since the establishment of the LBDR in 1993. The filing requirements for all new “.lb” domain name applications were revised as well, and the LBDR no longer requires the submission of a trademark certificate. The requirement stipulating that the applicant must have a postal address in Lebanon remains unchanged by the LBDR, however.
The PTO in Oman announced that the all trademark services will be conducted online as of March 7, 2021. These e-services, which will be provided via the PTO’s proprietary “Invest Easy” portal, replace previous procedures that required the submission of applications in person. The PTO also announced a 20 percent fee on the paid official fees for using the online portal for all trademark matters.
Saudi Arabia adopted the 11th Edition of the Nice Classification, thus replacing the outgoing 10th Edition. The adoption of the 11th Edition will not affect trademarks already filed and registered. Upon next renewal, the Saudi Authority for Intellectual Property (SAIP) will reclassify goods and services affected by this change in formalities accordingly.
The TMO announced that the legalized power of attorney () may be submitted within 30 days from filing date. As for the priority claim, no changes were made to the deadline. Priority documents in support of trademark applications may be submitted within a non-extendable period of three months from filing date.
More recently, the Director General of the World Intellectual Property Organization () welcomed the deposit of the instrument of accession of the UAE to the Madrid Protocol on September 28, 2021.
SAIP successfully confiscated and destroyed more than 5 million items that were in violation of intellectual property rights. The infringing products that were confiscated by the SAIP in a sting operation alongside the Zakat, Tax and Customs Authority and the Ministry of Information.
Updates on the Legal Scene:
Amendments to the GCC Patent Law were published in the Official Gazette No. 22 which was issued on April 11, 2021. In summary, the new law sees amendments or replacements of a number of articles, namely Articles 1, 4, 9, 17-21, 25, 28-30 and 32-33. Most importantly though, is the introduction of Article 1 (bis) and its various provisions wherein the GCC Patent Office may accept new patent filings at the request of one of the GCC national offices, as well as its examination. No patent will be granted without the approval of the requesting national office or offices, and in all cases, a GCC patent will only be enforced in the said country or countries only. As for pending and granted patents, these will be prosecuted and enforced pursuant to the law and regulations under which they were filed and no changes will be applied on them.
India published the Patents (Amendment) Rules of 2021, which amend the Patents Rules of 2003. The amendment now includes a new category, “eligible educational institutions.” Rule 2(ca) now defines an educational institution as “a university established or incorporated by or under Central Act, a Provincial Act, or a State Act, and includes any other educational institution as [recognized] by an authority designated by the Central Government or the State Government or the Union territories in this regard.” This means any eligible educational institution will benefit from reduced fees for the entire patent filing and prosecution, thereby incentivizing such establishments to apply for more patents, and bringing India a step closer to becoming a global player in patent filings.
The UAE issued and published the new Law on Industrial Property, Law No. 11 of 2021 in the Federal Gazette No. 706. The Law provides for the regulation and protection of patents, utility models, industrial designs and trade secrets. The Law entered into force on November 28, 2021, six months from the date of its publication. As of the date of posting the current review, the Implementing Regulations have not been published yet.
The Patent Office in Kuwait has begun substantive examination of patent applications and is issuing search and examination reports. The process is still a little shy but is expected to increase, as is the case with any new procedure. Furthermore, earlier this year, Patent Office published two granted patents in its January 2021 Official Gazette, making these the first two patents to be granted there. The laws and regulations in Kuwait are in place for the complete prosecution of patent applications, from filing to grant.
Oman and Saudi Arabia
Possibly resulting from the current situation with the GCCPO, both the Omani Patent Office and the SAIP have noticeably accelerated patent examination towards the second half of 2021. The Omani Patent Office has completed review and formality examinations in under one year, whereas previously, this may have been taking longer thus delaying the beginning of substantive examination. As for the SAIP, whereas the notification to publish a request examination would take at least 18 months from the national entry date, the same is being issued in under 12 months with the first search and examination report being issued only a few months following payment of the relevant examination fees.
In an effort to streamline patent prosecution, and in accordance with the Intellectual Property Office’s Guidelines published in Patents Bulletin No. 1 (Special Edition) of September 2021, substantive examination fees became due at the time of filing, instead of within six months from the national filing date. This requirement is with no retroactive effect and is intended to position the application in a state of readiness for prompt examination as soon as possible.
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